1. shopping
2. gifts
3. party supplies

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THE UTILITY OF PRETTINESS:
COPYRIGHT PROTECTION FOR MARDI GRAS INDIAN SUITS
IN THE ERA OF THE USEFUL ARTICLE ANALYSIS
by AZITA MIRZAIAN*
ABSTRACT
The Mardi Gras Indians of New Orleans, who honor a cultural tradition that arose during the time of slavery, have been masking as Plains
Indians for over a century. Each year, tribe members spend hundreds of
hours and thousands of dollars hand-crafting beautiful “suits” that are embellished with colorful beads, sequins, and feathers. These suits, which are
considered to be some of the finest examples of African American folk art
in North America, are then debuted at annual Mardi Gras street processions and festivities. Because the suits are so stunning, it has become common practice for photographers to photograph the suits and then use these
images in commercial projects such as prints, books, calendars, and tourism ads. The creators of the suits generally have not authorized these
commercial uses, nor are they compensated for them.
In recent years, some Mardi Gras Indian tribe members have been
looking to copyright law to protect their suits from this unauthorized commercial exploitation. This article aims to examine the Mardi Gras Indians’
struggle for copyright protection for their suits, and to determine whether
or not courts will uphold their recent copyright registrations, once they
inevitably result in litigation. The article examines the legal treatment of
“useful articles” over the past six decades, with a focus on the way courts
have handled the copyrightability of costume-like articles of clothing. Although costumes are generally presumed to be copyright ineligible, this
article applies the useful article analysis to the Mardi Gras Indian suits and
sets forth several grounds upon which the suits should be afforded copyright protection, regardless of whether they are categorized as mere costumes or as highly regarded sculptural works of art.
I.
INTRODUCTION
Each year, during Mardi Gras, thousands of revelers gather along
New Orleans’ affluent St. Charles Avenue to celebrate, drink, join in
*Azita Mirzaian is a Los Angeles-based attorney who practices in the areas of
intellectual property law and entertainment law. She received her Juris Doctorate
degree from the University of Southern California Gould School of Law. She
would like to thank Professor Daniel Klerman and Professor Ron Garet for their
support and assistance with this article.
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“krewe” parades, and catch the bead necklaces that are tossed from the
Mardi Gras floats. But while all this is going on, in the streets of New
Orleans’ working class, predominantly black neighborhoods, a different
type of tradition is being honored: the city’s Mardi Gras Indians are donning the incredibly ornate “suits” that they have spent the past year handcrafting and are taking to their neighborhood streets to engage in singing,
chanting, and dancing. Historically, the Mardi Gras Indians, who honor a
tradition that arose during the era of slavery, have been marginalized by
society. However, they are a long-established feature of New Orleans culture, and in recent years, they have gained more mainstream acceptance
and have become well known for their stunning suits and vibrant
processions.1
With this newfound acceptance has come a particular problem: it has
become common practice for photographers to take photographs of the
Mardi Gras Indians and their suits, and then use these images in commercial projects such as prints, books, calendars, and tourism ads. The creators of the suits are rarely asked for permission, and needless to say, they
are not compensated for these commercial uses. Recently, some Mardi
Gras Indian tribe members have begun looking to copyright law to protect
their suits from this commercial exploitation. If the Mardi Gras Indians
are able to obtain copyright protection for their suits, they may be able to
derive some profit from their commercial uses (or, alternatively, have the
power to put a stop to the unauthorized commercial uses).
But it is unclear whether or not, and to what extent, copyright law
protects the suits. In the words of the Fifth Circuit Court of Appeal, “the
case law on costume design is, to say the least, uneven.”2 Historically,
courts have treated articles of clothing and costumes as functional “useful
articles” that are not afforded copyright protection.3 However, a survey of
the relevant policy decisions and case law surrounding useful articles and
1
2
3
The New Orleans Convention & Visitors Bureau’s Web site acknowledges the
“elusive African-American Indian tribes,” stating that “their presentations
and chants as they show off their ‘new suits’ [are] a Mardi Gras day highlight.” See Mardi Gras – How it Works, NEW ORLEANS CONVENTION &
VISITORS BUREAU, http://www.neworleanscvb.com/static/index.cfm/contentID/363/sectionID/1/subsectionID/0 (last visited Oct. 23, 2012). In perhaps
an even more surprising show of mainstream acceptance, Mardi Gras Indians can now be hired to perform at private events (see mardigrasindianshow.com), have been featured on National Geographic’s Web site. See
Mardi Gras Indian Tribe, NAT’L GEOGRAPHIC, http://travel.nationalgeographic.com/travel/american-festivals/st-josephs-day-indians-photos (last
visited Oct. 24, 2012), and are prominently featured on the popular HBO
television show Treme.
Galiano v. Harrah’s Operating Co., Inc., 416 F.3d 411, 420 (5th Cir. 2005).
See Copyright Office Policy Decision: Registrability of Costume Designs, 56
Fed. Reg. 56, 530 (Nov. 5, 1991).
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costumes indicates that the Mardi Gras Indians’ particular situation may
be one in which the protections of the Copyright Act can be invoked.
This article aims to examine the Mardi Gras Indians’ struggle for copyright protection for their suits, and to determine whether or not courts
will uphold their recent copyright registrations, should they result in litigation. Part II will discuss the history of the Mardi Gras Indians, the relevance of their suits, and the unauthorized commercial exploitation of their
suits. Part III will examine the evolution of the treatment of useful articles
in case law over the course of the past six decades. It will also examine the
way courts have handled the question of the copyrightability of costumelike articles of clothing in recent years. Part IV will discuss several theories under which the Mardi Gras Indian suits should be given copyright
protection. Ultimately, this article argues that the Mardi Gras Indians’
suits should be afforded copyright protection, regardless of whether they
are categorized as mere costumes or as highly regarded sculptural works
of art.
II. WHO ARE THE MARDI GRAS INDIANS, AND WHY ARE
THEIR SUITS SO SPECIAL?
A.
The Tribes and the Suits
The concept of adult men dressing up as “Indians” and parading
through the streets of New Orleans may seem bizarre, but the Mardi Gras
Indians are actually a well-established New Orleans cultural institution
dating back to the 1800s. The exact origins of the Mardi Gras Indian traditions are obscure, but most accounts state that they arose as a way for
former slaves to connect with their African culture, while simultaneously
paying homage to certain Native American groups in the South.4 These
Native American groups, who had suffered their own share of persecution
and abuse at the hands of white people, assisted escaped and freed slaves,
offered them sanctuary, and welcomed them into their societies.5 The former slaves felt a close kinship with the Native Americans, and so as they
developed their own “outsider” traditions and culture, they incorporated
4
5
Michael P. Smith, Behind the Lines: The Black Mardi Gras Indians and the
New Orleans Second Line, 14 BLACK MUSIC RESEARCH J. 43, 45-47 (1994).
“The common masking tradition is both a continuation of Old World African culture and a natural synthesis with Native American tradition.” Id. at
57.
MICHAEL P. SMITH, MARDI GRAS INDIANS 24, 95 (Pelican Publishing Co.
2007) (1994). See also Campbell Robertson, Want to Use My Suit? Then
Throw Me Something, N.Y. TIMES, Mar. 23, 2010, at A13, available at http://
www.nytimes.com/2010/03/24/us/24orleans.html.
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many aspects of Native American culture.6 Because these former slaves
were excluded from the lavish Mardi Gras celebrations of the wealthy
whites of New Orleans, they developed their own outsider masking traditions in which they dressed up as Plains Indians.7 The first “Mardi Gras
Indian” tribe, the “Creole Wild West,” was established around 1885, and
by 1900, it was reported that the favorite disguise of a masking black New
Orleanian during Mardi Gras was that of the “Indian warrior.”8 Today,
anyone familiar with the “dress, dance, music, and rituals of the [Mardi
Gras] Indians . . . knows without a doubt that this is virtually the same
African-American culture described in all the historical accounts.”9
Notably, throughout history, the Mardi Gras Indians were seen as
rogue (and possibly dangerous) groups — this was attributable to societal
racism, as well as the tribe members’ low socio-economic statuses, their
penchant for having violent showdowns with other tribe members, and
their unfortunate habit of referring to their tribes as “gangs.”10 Tribes refused to obtain parade permits for their street processions, the press often
reported on the “bloody battles” that occurred during Mardi Gras Indian
events, and fearful authorities used these reports to justify harsh oppression of the tribes’ ritual activities.11 But as the decades passed and violent
showdowns between tribes became more infrequent, Mardi Gras Indian
6
7
8
9
10
11
JAMES GILL, LORDS OF MISRULE: MARDI GRAS AND THE POLITICS OF RACE
IN NEW ORLEANS, 140-41 (1997).
SMITH, supra note 5, at 74, 97; “Native and black Americans were kin in spirit,
ways, and hopes. In addition to sharing an interest in the struggle against
European hegemony, blacks and Indians shared a similar world view and an
interest in ceremonial arts, masking, and seasonal renewal.” Id. at 145; see
also Rick Bragg, Another Battle of New Orleans: Mardi Gras, N.Y. TIMES,
Feb. 19, 1995, at 1, available at http://www.nytimes.com/1995/02/19/us/another-battle-of-new-orleans-mardi-gras.html.
SMITH, supra note 5, at 97, 106.
Id. at 145.
Id. at 65. Not surprisingly, the New Orleans Police Department has a long
history of tense confrontations with the Mardi Gras Indians, but in recent
years, it has been trying to change its habit of treating the Mardi Gras Indians as unlawful gangs and breaking up their street processions. Katy
Reckdahl, Mardi Gras Indians, New Orleans Police Meet to Avoid Conflicts
on St. Joseph’s Night, TIMES PICAYUNE, Mar. 18, 2011, http://www.nola.
com/mardigras/index.ssf/2011/03/mardi_gras_indians_new_orleans.html.
SMITH, supra note 5 at 65. “Unlike the middle- and upper-class Social and
Pleasure clubs that register for parade permits, hire bands, and allow their
parades to be routed, monitored, and timed by the city, the underclass black
Indians remain tribal and anonymous, perform their own music, and march
through the city on the back streets, where they come and go as they please.
As in colonial times, they still deny outside authority and refuse to subject
themselves to the financial burdens and humiliation of being monitored and
controlled by the city.” Id. at 51.
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culture evolved into a more mainstream and accepted aspect of New Orleans’s culture.
Today, there are approximately thirty “tribes” of Mardi Gras Indians
that represent the various neighborhoods of New Orleans.12 Each tribe is
led by a “big chief,” while other tribe members serve important roles such
as that of “wildman,” “spyboy,” “first flag,” and “queen.”13 Tribe members regularly meet to engage in traditional chanting, drumming, singing,
and dancing, and they are known for their vibrant musical street processions.14 In fact, the Mardi Gras Indians are recognized “as principal carriers of African-American dance and drumming traditions fundamental to
the creation and development of jazz and other popular musics in the city
[of New Orleans].”15 But perhaps the most distinctive feature of the
Mardi Gras Indian culture is the Mardi Gras Indian suits — the colorful,
elaborate, hand-made outfits that are showcased in dances and processions
in the back streets of New Orleans during Mardi Gras each year.16 In the
past, the tribes would often have violent showdowns with one another during these processions, but in recent decades, the processions have focused
less on tribal aggression, and more on ritualized displays of dance and protocol, with an emphasis on the respectful showcasing of the suits.17 At the
heart of these displays is the question of whose suit is the “prettiest.”18
The members of each tribe carefully inspect the complexity, artistry, and
colors of the new suits of the other tribes’ members.19 Tribe members
then present speeches and dances that describe the history and symbolism
of the decorative elements of their suits.20 Finally, after inspecting each
others’ new suits, making ritual challenges and responses, and singing
songs, each tribe continues on to seek encounters with other tribes.21
Historically, Mardi Gras Indian suits were constructed using turkey
feathers, shards of glass, eggshells, bottle caps, and whatever else came to
hand.22 Not surprisingly, as the focus of Mardi Gras Indian processions
shifted from warmongering to displays of aesthetic superiority, the suits
took center stage and became more and more elaborate. Today, the typi12
13
14
15
16
17
18
19
20
21
22
Robertson, supra note 5.
SMITH, supra note 5, at 57.
Id. at 65. The tribe members frequently hold “practices” where they dance,
drum, and chant — their music is considered to be one of their most important contributions to the culture of New Orleans. Id.
SMITH, supra note 5, at 18.
Robertson, supra note 5.
SMITH, supra note 5, at 65.
Robertson, supra note 5.
SMITH, supra note 5, at 65.
Id.
Id.
GILL, supra note 6, at 140.
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cal Mardi Gras Indian suit is an ornate and colorful extravaganza of
brightly-dyed ostrich feathers, velvet, and meticulously-affixed glass beads,
rhinestones, and sequins.23 A suit will usually have several parts, including a headpiece (the “crown”), a chest piece (the “necklace”), a torso covering (the “apron” and “belt”), leggings, and matching regalia (such as
shields).24 Each suit can weigh up to one hundred pounds, and is worn
over regular clothing.25 Tribe members take pride in creating new suits
from scratch each year, so as soon as one year’s processions are over, they
must begin designing and crafting the next year’s suits.26 Mardi Gras Indian historian Michael P. Smith notes:
It would not be unusual for a prominent Mardi Gras Indian to spend
three months designing and planning, and then labor three to five hours a
day for six months to build a respectable new suit. Most of this time is
spent in the sewing of the elaborate bead patches, which include hundreds of thousands of colored beads, usually depicting a scene of special
significance to the maker of the suit, or, as in the case of the more Africanesque tribes, as many sequins and other materials in elaborate sculptural constructions. Feathers are always the final touch, being the last
element incorporated into the new suit . . . in both African and in Native
American cultures, feathers symbolized flight and freedom.27
The materials and supplies required for each suit can cost several
thousand dollars.28 Since most Mardi Gras Indians hail from workingclass black neighborhoods, the costs of their suits can take up most or all
of their disposable income.29
Traditionally, Mardi Gras Indian tribe members would disassemble
their suits after each year’s festivities, re-using some elements (such as the
beads) and burning whatever they could not re-use.30 Today, if a suit is
23
24
25
26
27
28
29
30
Robertson, supra note 5; Bragg, supra note 7.
For a first-hand account of the work that goes into constructing a Mardi Gras
Indian suit, see the short video documentary on the Mardi Gras Indians,
produced by The American Festivals Project, available at http://vimeo.com/
3841689 (last visited Oct. 23, 2012).
Mardi Gras Indians Seek to Copyright Costumes, NPR NEWS: ALL THINGS
CONSIDERED (Feb. 8, 2011), http://www.npr.org/2011/02/08/133600362/
Mardi-Gras-Indians-Seek-To-Copyright-Costumes (last visited Oct. 24,
2012); Robertson, supra note 5.
Robertson, supra note 5.
SMITH, supra note 5, at 122. The construction of some of the more intricate
suits requires the assistance of “several helpers during the final months of
work, and sometimes (for the big chief) . . . as many as ten to twenty helpers
during the final days before Mardi Gras.” Id. at 115.
Id. at 115.
Mardi Gras Indians Seek Copyright Protection for Their Suits, CARNIVAL NEW
ORLEANS NEWS (Feb. 8, 2011), http://blog.carnivalneworleans.com/
?p=2455; see also SMITH, supra note 5, at 10.
Robertson, supra note 5; SMITH, supra note 5, at 115.
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dismantled after Mardi Gras Festivities, its beaded patches are saved and
displayed in the tribe member’s home, “much the same as a ‘religious altar’ in that [they serve] as a spiritual reminder — and then incorporated
into the design of a new suit the following year.”31 In recent years, as the
suits have gained wide recognition as being some of the best examples of
African-American folk art in North America, the practice of disassembling the suits has become less common.32 The suits’ value in the art market has escalated in recent decades, and they are now ardently sought after
by collectors and museums.33 For example, the Backstreet Cultural Museum in New Orleans, a museum that exhibits African American cultural
artifacts, houses a large collection of past years’ Mardi Gras Indian suits.34
B.
The Unauthorized Commercial Uses of the Mardi Gras Indian Suits
Over the years, the Mardi Gras Indians have become iconic figures in
New Orleans, representative of the city’s vibrancy and cultural heritage.
Come Mardi Gras each year, crowds of spectators gather to watch the
tribe members debut their new suits and engage in impressive dances and
street processions.35 The spectators frequently bring cameras and snap
photographs of the Mardi Gras Indians and their picturesque outfits.36
However, not all of these photographs are used as personal mementos;
many of them are put to commercial use, published in coffee-table books,
calendars, tourism ads, and posters.37 Some photographers even sell highquality prints of the images online and in art galleries throughout the
city.38 The Mardi Gras Indian tribe members, who have often put
thousands of dollars and months of hard work into their suits, never see a
dime of the profits gained from these commercial uses.39
For years, the Mardi Gras Indians have been aware of the commercial
exploitation of their suits, but have not had the ability or resources needed
31
32
33
34
35
36
37
38
39
SMITH, supra note 5, at 122.
Id.
Id.
See BACKSTREET CULTURAL MUSEUM, http://backstreetmuseum.moonfruit.
com/#/collections-exhibitions/4544609175 (last visited Oct. 23, 2012).
Mardi Gras Indians Seek to Copyright Costumes, supra note 25.
Id.
Id.
Christopher Porche´ West is one New Orleans photographer who is famous for
his photographs of the Mardi Gras Indians. His Web site features his portfolio of Mardi Gras Indian photographs, as well as an online store where
people can purchase prints of the photographs for approximately $450 each.
See PORCHE´ WEST, http://www.porche-west.com/116/mardi-gras-indians.html (last visited Oct. 23, 2012).
Mardi Gras Indians Seek to Copyright Costumes, supra note 25.
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to stop it from occurring.40 The Mardi Gras Indian culture has never been
about making money, and even today, some think that it is distasteful that
tribe members are trying to get a portion of the profits from commercial
uses of their suits.41 But even those who have viewed these unauthorized
commercial uses as exploitation all along have traditionally been powerless to stop them. Most Mardi Gras Indian tribe members hail from working class neighborhoods and have little disposable income to spend on
legal advice. Furthermore, it always seemed that the most obvious avenue
of legal redress, copyright protection, was closed to the Mardi Gras Indians; copyright law categorically does not protect costumes or clothing, so it
was unclear what kind of legal protections the Mardi Gras Indians could
get for their suits.42
In 2006, a Tulane Law School professor named Ashlye Keaton began
working with the Mardi Gras Indians, hoping to use copyright law to help
them stop the commercial exploitation of their suits.43 Since the suits are
“original works” (conceived and handmade by the tribe members who
wear them), and are “fixed in [a] tangible medium of expression” (cloth,
feathers, sequins, beads, etc.), it seems that they should fall under the protection of copyright law.44 Unfortunately, costumes and articles of clothing are considered to be “useful articles” and thus are generally exempt
from copyright protection.45 Keaton’s position, however, is that the suits
are not really costumes or articles of clothing, but are actually sculptural
works of art.46 And because the Copyright Code does protect works that
fall under the category of “sculptural works,” the tribe members’ suits
should get full copyright protection, including the right to license the production of derivative works that feature the suits (such as photographic
prints, coffee table books, posters, and advertisements), and the right to
bring legal action against parties who produce unauthorized derivative
40
41
42
43
44
45
46
Id.
Robertson, supra note 5. On the other end of the spectrum, there are some
(primarily photographers) who feel that if the Mardi Gras Indians want to
make money off of their culture, they should commodify and self-exploit,
instead of going after others who successfully commercially exploited their
images. Id.
See Copyright Office Policy Decision: Registrability of Costume Designs,
supra note 3. “The Copyright Office has generally refused to register claims
to copyright in three-dimensional aspects of clothing or costume design on
the ground that articles of clothing and costumes are useful articles that
ordinarily contain no artistic authorship separable from their overall utilitarian shape.” Id.
Mardi Gras Indians Seek to Copyright Costumes, supra note 25.
See 17 U.S.C. § 102(a) (2006).
Id. § 101; U.S. Copyright Office, Useful Articles, http://www.copyright.gov/fls/
fl103.html (last visited Oct. 23, 2012).
Mardi Gras Indians Seek to Copyright Costumes, supra note 25.
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works.47 Operating under this theory, over the course of the past few
years, Keaton has been helping the Mardi Gras Indians register their suits
for copyright protection with the U.S. Copyright Office.48 But should
these copyright registrations become the subject of litigation in the future,
it is unclear whether and to what extent they will be upheld by a court of
law.
It is worth noting here that the Mardi Gras Indians are not seeking
copyright protection in order to ban people from taking photographs of
their suits.49 They are perfectly happy allowing spectators to take photographs for their own personal uses.50 Furthermore, even if the suits are
copyrighted, the principles of fair use would still apply — so the photographs could also be used for purposes of education, news reporting, criticism, and other fair uses.51 Essentially, if the Mardi Gras Indians’ suits
were granted copyright protection, anyone could still photograph the suits,
but they would not be permitted to use these photographs for unauthorized commercial purposes; a commercial use that focused on a copyrighted Mardi Gras Indian suit would be considered to be a derivative
work, and thus would require a license granted by the copyright-holding
tribe member.52 Chief Howard Miller of the Creole Wild West tribe summarized many tribe members’ feelings on the subject when he said, “A lot
goes into the suits — time, hours, blood, sweat, tears, [and] money. And
47
48
49
50
51
52
17 U.S.C. §102 (2006); Mardi Gras Indians Seek to Copyright Costumes, supra
note 25.
Mardi Gras Indians Seek to Copyright Costumes, supra note 25.
Id.
Id.
17 U.S.C. § 107 (2006).
Robertson, supra note 5. Note that the strength of the copyright protection
that a photograph gets is largely based on the original contribution of the
photographer in depicting the subject matter. See generally Burrow-Giles
Lithographic Co. v. Sarony, 111 U.S. 53 (1884). The more a photographer
contributes to the photograph (in terms of framing, composition, lighting,
and other factors), the more likely that the photographer may claim his or
her own copyright rights. If a photograph simply depicts a copyrighted original work (such as a Mardi Gras Indian suit), without any artistic contribution on the part of the photographer, it will likely be found to be in
violation of the original work’s copyright. Notably, most of the unauthorized, commercially-used suit photographs that the Mardi Gras Indians are
concerned about are taken during fast-paced dances and street processions,
so it seems that photographers would have a very hard time claiming credit
for many of the photographs’ features (such as lighting and composition).
Because the photographers’ original contributions to such photographs are
minimal, they would probably have problems claiming their own copyright
rights over the images.
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so it’s only fair that . . . we should be able to be compensated if someone
else is going to be paid.”53
III. THE COPYRIGHTABILITY OF USEFUL ARTICLES AND
COSTUMES
In the event that the Mardi Gras Indians’ suits’ copyright registrations
become the subject of litigation — and it seems that it is only a matter of
time before they do — it is unclear whether or not a federal court will
uphold them. The case law is unclear on whether or not “costumes” like
the Mardi Gras Indian suits are eligible for copyright protection or not.
In order to address the copyrightability of the Mardi Gras Indian suits, it is
necessary to first examine the way the relevant case law and policy has
treated useful articles and costumes over the past few decades.
A.
Useful Articles
The primary goal of copyright law is to protect the creators of eligible
“original works” by granting them a bundle of rights in regards to their
works. These rights include the right to reproduce the work, the right to
distribute the work, the right to publicly display the work, and the right to
permit derivative works to be produced.54
Copyright protection is afforded to “original works of authorship,
fixed in any tangible medium of expression,” including literary works, photographs, pictorial or graphic artwork, and sculptural works.55 While it
seems that the scope of the Copyright Act’s protection is broad, it does not
extend to certain areas, such as ideas, concepts, and discoveries.56 Technically, copyright law also does not protect things that are “useful articles”
— these are things that have “intrinsic utilitarian function that is not
merely to portray the appearance of the article.”57 Useful articles include
things such as clothing, automobile bodies, furniture, and machinery —
53
54
55
56
57
Mardi Gras Indians Seek to Copyright Costumes, supra note 25. Notably, the
fact that the Mardi Gras Indians put countless hours of labor, “blood, sweat,
[and] tears” into the creation of their suits is not, in and of itself, an adequate basis for copyright protection; mere “sweat of the brow” does not
entitle the creator of a work to copyright protection. Feist Publ’ns, Inc. v.
Rural Telephone Serv. Co., Inc., 499 U.S. 340, 360 (1991). Rather, the work
must exhibit originality and “more than a de minimis quantum of creativity.” Id. at 360, 363-64.
17 U.S.C. § 106 (2006). A derivative work is a work that is based on a preexisting work, where the original work has been recast, transformed, or
adapted in some way. Id. § 101. An art reproduction or photograph of an
original, copyrighted work is considered to be a derivative work. Id.
Id. § 102(a).
Id. § 102 (b).
Id. § 101.
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things that are functional and have designs that are very closely tied to
their functions.58 Although the general rule is that a useful article is not
copyrightable as a whole, some artistic aspects of the article may be afforded copyright protection in certain instances.59 For years, “courts have
twisted themselves in knots trying to create a test to effectively ascertain
whether the artistic aspects of a useful article can be identified separately
from and exist independently of the article’s utilitarian function.”60
It seems that courts really began grappling with the copyrightability of
useful articles in 1954, when the Supreme Court heard a case called Mazer
v. Stein.61 In Mazer, in which the copyrightability of lamps with statuette
bases was in question, the court established that utility and art are not
mutually exclusive; it held that “neither the Copyright Statute nor any
other says that because a thing is patentable it may not be copyrighted.”62
Years later, the 1976 Copyright Act attempted to codify and clarify the
standard set by Mazer, which Congress understood to be “that works of
art which are incorporated into the design of useful articles, but which are
capable of standing by themselves as art works separate from the useful
article, are copyrightable.”63 The 1976 Copyright Act attempted to designate when a useful article could and could not be copyrighted, stating,
“The design of a useful article . . . shall be considered a pictorial, graphic,
or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian
aspects of the article.”64 But this newly-articulated “separability” test was
vague and needed to be fleshed out; it seemed to imply that the design
elements of a useful article could be copyrighted only if they could be
physically separated from the useful article, but this was something that
could be done in only select instances (such as in the case of the Mazer
lamp base statuettes).
The separability test became even more complicated in 1980, when
the Second Circuit Court of Appeals heard Kieselstein-Cord v. Accessories
by Pearl, Inc.65 In Kieselstein-Cord, a case concerning the copyrightability
of ornamental belt buckles, the court indicated that the separability test
58
59
60
61
62
63
64
65
U.S. Copyright Office, Useful Articles, supra note 45.
17 U.S.C. § 101 (2006). See generally Carol Barnhart, Inc. v. Economy Cover
Corp., 733 F. 2d 411 (2d Cir. 1985); Brandir Int’l, Inc. v. Cascade Pacific
Lumber Co., 834 F. 2d 1142 (2d Cir. 1987).
Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 670 (3d Cir.
1990).
Mazer v. Stein, 347 U.S. 201 (1954).
Id. at 217.
H.R. REP. NO. 94-1476 (1976), at 50, reprinted in 1976 U.S.C.C.A.N. 5659-801.
17 U.S.C. § 101 (2006).
632 F.2d 989 (2d Cir. 1980).
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could be satisfied by not only physical separability, but also by conceptual
separability.66 The court in that case determined that the belt buckles in
question were entitled to copyright protection to some extent because
their “primary ornamental aspect . . . [was] conceptually separable from
their subsidiary utilitarian function.”67 In light of Kieselstein-Cord, it was
clear that the copyrightability of a useful article could hinge on either
physical separability or conceptual separability, but this was a standard
that was still too vague to be practically put to use by courts.
In 1983, a University of Nebraska law professor named Robert C.
Denicola published an influential article on the topic of the copyrightablity
of useful articles such as works of industrial design.68 In his article, Denicola suggested that, because the dominant characteristic of a useful article
is “the influence of nonaesthetic, utilitarian concerns, copyrightability ultimately should depend on the extent to which the work reflects artistic expression uninhibited by functional considerations.”69 In this way,
copyright protection would be afforded to a useful article’s “features and
shapes that reflect, even in their utilitarian environment, the unconstrained aesthetic perspective of the artist.”70
Three years after the publication of Denicola’s article, the Second
Circuit Court of Appeals adopted this “Denicola test” in Brandir International v. Cascade Pacific Lumber.71 In assessing the copyrightability of a
bicycle rack that had been based on a sculptural work of art, the court
clarified the test for conceptual separability: “Where design elements can
be identified as reflecting the designer’s artistic judgment, exercised independently of functional influences, conceptual separability exists,” but
where a design element is “influenced in significant measure by utilitarian
concerns,” the design is not conceptually separable from the underlying
article.72
In 2004, the Seventh Circuit Court of Appeals also adopted the Denicola/Brandir International test for conceptual separability in the case of
Pivot Point International, Inc. v. Charlene Products, Inc.73 The court
66
67
68
69
70
71
72
73
Id. at 993.
Id. It is worth noting that courts today do not seem to concern themselves
with what the primary function and subsidiary function of an article are; this
“primary function” inquiry was long ago deemed to be too subjective and
problematic to be practical. See Robert C. Denicola, Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles, 67
MINN. L. REV. 707, 733-34 (1983).
See Denicola supra note 67.
Id. at 741.
Id. at 748.
834 F.2d 1142, 1145 (2d Cir. 1987).
Id. at 1145, 1147.
372 F.3d 913 (7th Cir. 2004).
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stated: “Conceptual separability exists . . . when the artistic aspects of an
article can be conceptualized as existing independently of their utilitarian
function. This independence is necessarily informed by whether the design
elements can be identified as reflecting the designer’s artistic judgment
exercised independently of functional influences.”74 In 2010, the Fourth
Circuit followed suit in Universal Furniture International, Inc. v. Collezione
and accepted the formulation of the conceptual separability test as set
forth in Pivot Point.75 The court held that a set of highly ornate furniture
was eligible for copyright protection because the decorative elements that
adorned the furniture — three-dimensional shells, leaves, columns, finials,
rosettes, and other carvings — were “superfluous nonfunctional adornments for which the shape of the furniture (which [was] not copyrightable)
serve[d] as the vehicle.”76 The designer’s design and placement of the
decorative elements “was not as much the result of utilitarian pressures as
aesthetic choices.”77
Today, the definition of conceptual separability that was set forth in
Brandir, Pivot Point, and Collezione seems to be generally accepted by
courts and is used to assess the copyrightability of various types of useful
articles.78
B.
Costumes and Costume-Like Articles of Clothing
Over the course of the last few decades, the case law regarding the
copyrightability of costumes has evolved along with the case law regarding
the copyrightability of useful articles. Although costumes and costumelike articles of clothing have generally been subjected to the same separability test that all useful articles are subjected to,79 cases in recent decades
show courts grappling with the question of the purpose and functionality
of costumes and costume-like articles of clothing.80
In 1984, prior to the general acceptance of the Denicola test for separability, the Ninth Circuit Court of Appeals heard Poe v. Missing Persons.81 The case addressed the copyrightability of an article that
resembled a swimsuit, but which the designer insisted was a conceptual
74
75
76
77
78
79
80
81
Id. at 931.
618 F.3d 417, 432-33 (4th Cir. 2010).
Id. at 434.
Id.
See e.g., Bonazoli v. RSVP Int’l., Inc., 353 F. Supp. 2d 218, 225 (D. R.I. 2005).
See Fabrica, Inc. v. El Dorado Corp., 697 F.2d 890, 893 (9th Cir. 1983), which
held that costumes are copyrightable to the extent that they have features
which can be identified separately and are capable of existing independently as a work of art.
See Chosun Int’l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 330 (2d Cir.
2005).
745 F.2d 1238 (9th Cir. 1984).
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“artwork in the medium of soft sculpture.”82 While the court did not ultimately decide whether the work in question was or was not copyrightable,
it did hold that there was a disputed issue of material fact as to whether
the sculptural work in question was a useful article.83 The court pointed
out that the work, which was constructed of clear plastic and crushed rock,
was so impractical as an article of clothing, that it was unclear whether or
not the work could be worn as an article of clothing for swimming or any
other utilitarian purpose.84 Indeed, it seemed to the court that “the only
reason for existence of [the work] was as a work of art.”85 The court
noted that, when evaluating the work’s copyrightability, some relevant inquiries included: the usefulness of the article, whether its functional aspects could be separated from its artistic aspects, what the designer’s
intent was when he designed the article, and whether or not the article
would be considered by the art world to be a piece of marketable
artwork.86
Although the nebulous Poe decision seemed to call for a broad inquiry into the usefulness of, marketability of, and designer intent behind
costume-like articles of clothing, cases in the years that followed seemed
to use a far more narrow inquiry that essentially examined separability.
For instance, in the 1985 decision, Animal Fair, Inc. v. Amfesco Industries,
Inc., the federal district court in Minnesota took up the question of the
copyrightability of a furry novelty slipper that was shaped like a bear’s
paw.87 The court held that the entire exterior design of the novelty slipper
was protectable under the Copyright Act because virtually all of the design aspects of the slipper could be identified and conceptually separated
from its utilitarian aspects.88 The court noted that the slipper’s impractical
shape, the artwork on its sole, its particular combination of colors, and its
profile were “all sculptural features which comprise[d] the artistic design
and which [were] wholly unrelated to function.”89
In 1988, a federal district court in California examined the copyrightability of Halloween costumes in National Theme Productions, Inc. v. Jerry
B. Beck, Inc.90 The court held that the costumes were entitled to copy82
83
84
85
86
87
88
89
90
Id. at 1239. The piece was apparently constructed of clear plastic material,
plastic tubing, and crushed rocks. Id. at 1241.
Id. at 1241.
Id. at 1242. “We are also unable to determine merely by looking at Poe’s creation whether a person wearing this object can move, walk, swim, sit, stand,
or lie down without unwelcome or unintended exposure.” Id.
Id.
Id. at 1243.
620 F. Supp. 175 (D. Minn. 1985).
Id. at 187.
Id. at 187-88.
696 F. Supp. 1348 (S.D. Cal 1988).
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right protection because their design and form had “little to do with their
suitability as wearing apparel.”91 The court referenced Denicola, noting
that the costumes in question primarily represented the artists’ arbitrary
conceptions responsive to their aesthetic sensibilities, and that “the three
dimensional nature of the costumes [did] not bar their classification as applied art.”92 National Theme Productions, Inc. was notable because although the court cited the existence of conceptual separability as the main
reason the costumes were copyrightable, its analysis seemed to dwell on
the fact that the costumes did not “function well as articles of clothing.”93
The court noted that the costumes did not permit the wearer to move
freely or sit easily, and that their “artistic features simply [did] not advance
their utilitarian purpose as clothing or accessories.”94 Ultimately, it
seemed as though the costumes were deemed copyrightable at least partially because they were so impractical as items of clothing that they had
no utilitarian purpose; the court concluded that “given the minimal functional considerations [that] went into the design of the costumes, . . . they
should be afforded protection as applied art under the copyright law.”95
Two years after National Theme Productions, Inc., the Third Circuit
similarly placed a great emphasis on the utility of a costume-like accessory
when assessing its copyrightability. In Masquerade Novelty, Inc. v. Unique
Industries, Inc., the court held that masks did not fall into the category of
“useful articles,” because “masks have no utility that does not derive from
their appearance.”96 In other words, the Masquerade Novelty court’s position was that masks do not even technically meet the definition of a “useful article” in the first place, so there is no need to assess the separability
of their artistic and utilitarian qualities.97 The court concluded that the
masks in question were copyrightable as sculptural works.98
Shortly after the Masquerade Novelty decision, the Copyright Office,
perhaps concerned that courts were being a little too unclear in their use91
92
93
94
95
96
97
98
Id. at 1353.
Id.
Id.
Id. at 1353-54.
Id. at 1354.
912 F.2d 663, 670-71 (3d Cir. 1990).
See id. at 671. The court pointed out that:
the utilitarian nature of an animal nose mask or a painting of the crucifixion of Jesus Christ inheres solely in its appearance, regardless of the fact
that the nose mask’s appearance is intended to evoke mirth and the
painting’s appearance a feeling of religious reverence. Thus, Masquerade’s nose masks are not “useful articles” for purposes of 17 U.S.C. § 101,
and are copyrightable as sculptural works.
Id.
Id.
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ful article analyses, issued a policy decision that aimed to clarify the issue
of the copyrightability of costumes and masks.99 The Office’s 1991 policy
decision acknowledged that “costumes, by their very nature, exist at the
boundary between works of imagination and works of utility.”100 The decision went on:
For purposes of copyright registration, fanciful costumes will be treated
as useful articles. Costumes serve a dual purpose of clothing the body and
portraying their appearance. Since clothing the body serves as a useful
function, costumes fall within the literal definition of useful article. . . . In
accordance with the copyright principles applying to useful articles, fanciful costumes will be registered if they contain separable pictorial or sculptural authorship. The separable authorship may be physically separable,
meaning that the work of art can be physically removed from the costume, or conceptually separable, meaning that the pictorial or sculptural
work is independently recognizable and capable of existence apart from
the overall utilitarian shape of the useful article.”101
The Copyright Office’s 1991 policy decision tried to put to rest any
contention that costumes are not useful articles, clearly stating that they
are useful articles and are subject to the separability test.102 It also clearly
stated that masks could be copyrightable as pictorial/sculptural works,
“since masks generally portray their own appearance” and thus fall
outside of the definition of a useful article.103 The policy decision did not
really provide a good explanation for the disparate treatment of costumes
and masks — both items that merely “portray their own appearance” —
other than to state that sometimes costumes serve a useful “clothing”
function, while masks do not seem to serve any useful function.104
Although the Copyright Office’s policy decision tried to be as clear as
it could regarding the copyrightability of costumes, courts continued to
grapple with the overall usefulness of costumes. For example, over a decade after the Copyright Office’s policy decision, in Chosun International,
Inc. v. Chrisha Creations, the Second Circuit expressed skepticism regarding the contention that all costumes should automatically be considered to
be useful articles.105 The Chosun court noted that “the function of a costume is, precisely, to portray the appearance of something,” which puts it
99
100
101
102
103
104
105
Copyright Office Policy Decision: Registrability of Costume Designs, supra
note 3.
Id.
Id.
Id.
Id.
Id.
413 F.3d 324, 330 (2d Cir. 2005). The opinion continued: “Were this the case,
masks would necessarily be deemed ‘useful articles.’ But that view has been
expressly rejected by both the Copyright Office and by other circuits.” Id.
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at odds with the definition of a “useful article.”106 Nonetheless, the court
conceded that for years, articles of clothing have been categorized as useful articles, generally excluded from copyright eligibility, and subject to the
separability test in order to determine what, if any aspects of the clothing
are eligible for copyright protection.107
In 2005, the Fifth Circuit Court of Appeals set aside the question of
the usefulness of costumes and instead reopened the question of the conceptual separability test as it applies to costumes. In Galiano v. Harrah’s
Operating Co., the Fifth Circuit looked at the copyrightability of fanciful
casino uniforms, noting that although “there is little doubt that clothing
possess[es] utilitarian and aesthetic value,” the question of “how to conduct the conceptual separation is . . . what continues to flummox federal
courts.”108 The court pointed out that recent case law proposed at least
six distinct variations of the conceptual separability test, and tried to determine which approach was the most appropriate to apply to garment design.109 Pivot Point seemed to offer the most thorough and persuasive
analysis of conceptual separability, summarized by the Galiano court as:
“Where artistic discretion dominates practical necessity as the driving
force behind design choices, a useful article may nonetheless qualify for
protection as a [pictorial, graphic, or sculptural] work.”110 But despite the
“elegance” of the Pivot Point test, the Galiano court declined to adopt it,
explaining that “sometimes [courts] must favor what might be a sub-optimal prophylactic rule because it is more determinate than the theoretically
superior but hopelessly subjective one.”111
The Galiano court determined that although “the caselaw on costume
design is, to say the least, uneven,” it generally “tends to reflect a direct
relationship between a costume’s copyrightability and its actual or potential market value as a stand-alone piece of artwork.”112 The court pointed
to the Kieselstein-Cord 1980 decision and Poe in 1984 as two cases in
which courts recognized the copyrightability of a useful article of clothing
based on “the capacity of the item to moonlight as a piece of marketable
artwork.”113 Ultimately, the Galiano court adopted the Poe decision’s
“likelihood-of-marketability standard for garment design only, because it
appear[ed] firmly rooted as the implicit standard courts ha[d] been using
106
107
108
109
110
111
112
113
Id.
Id. at 328.
416 F.3d 411, 417, 419 (5th Cir. 2005).
Id. at 417.
Id. at 418.
Id. at 421.
Id. at 420.
Id.
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for quite some time.”114 The court acknowledged that this marketability
standard poses some pitfalls, but determined that any problems would be
minimal since the standard would only apply to a single type of applied
art: garment design.115
IV.
COPYRIGHT PROTECTION FOR THE MARDI GRAS
INDIANS’ SUITS
Currently, the law concerning the copyrightability of costumes is still
very much evolving and developing. Some courts continue to question the
usefulness of costumes and whether or not they should be categorized as
useful articles,116 while other courts accept that costumes are useful articles, but question which formulation of the conceptual separability test
should be applied to them.117 Should the focus simply be on whether or
not the costume’s design aspects can be identified and conceptually separated from its utilitarian aspects?118 Should the focus be on how functional or impractical the costume is as an item of clothing?119 Or should
the focus be on whether or not the costume has actual or potential market
value as a stand-alone piece of artwork?120
It seems, then, that whether or not the Mardi Gras Indians can obtain
copyright protection for their suits depends on what court hears their
cases, and which standard of inquiry that court uses. Interestingly, though,
the facts of the Mardi Gras Indians’ particular situation indicate that no
matter which standard of inquiry is used, the suits should be afforded copyright protection.
114
115
116
117
118
119
120
Id. at 421.
Id. at 421-22. “For example, some have argued that . . . this standard is foreign
to copyright . . . We do not find [this argument] to be particularly compelling, because all of the lawmaking with respect to PGS works is interstitial,
and most of it strikes us as freewheeling.” Id. at 421. The court also
pointed out that it is not unheard of for courts to use a particular standard
for a particular type of applied art — for example, courts use a “arrangement” or “merger” standard when analyzing the copyrightability of maps,
and this analysis “does not at all resemble the ‘separability’ analysis of the
Pivot Point cases.” Id. at 422.
Masquerade Novelty, Inc. v. Unique Indus., 912 F.2d 663, 670 (3d Cir. 1990);
Chosun Int’l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 330 (2d Cir.
2005).
Galiano v. Harrah’s Operating Co. 416 F.3d 411, 417, 419 (5th Cir. 2005).
Animal Fair, Inc. v. Amfesco Indus., Inc., 620 F. Supp. 175, 187 (D. Minn.
1986).
Nat’l Theme Prods. v. Jerry B. Beck, Inc., 696 F. Supp. 1348, 1353 (S.D. Cal.
1988).
Galiano, 416 F.3d at 420; Poe v. Missing Persons, 745 F.2d 1238, 1243 (9th Cir.
1984).
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Copyright Protection Because Mardi Gras Indian Suits Do Not
Technically Meet the Definition of “Useful Articles”
The Copyright Code’s § 101 defines a “useful article” as something
that has “intrinsic utilitarian function that is not merely to portray the appearance of the article.”121 Because a costume’s purpose, arguably, is to
portray the appearance of itself, early copyright cases having to do with
costume-like articles of clothing questioned whether or not such articles
should even be categorized as useful articles, or if they really are more
akin to sculptural works.122 The Copyright Office’s 1991 policy decision
tried to put this debate to rest, stating, “Costumes serve a dual purpose of
clothing the body and portraying their appearance. Since clothing the
body serves as a useful function, costumes fall within the literal definition
of a useful article.”123 But the issue does not seem to have really been put
to rest; as recently as 2005, the Second Circuit Court of Appeals pointed
out that “the function of a costume is, precisely, to portray the appearance
of something,” which seems to place it outside of the definitional boundaries of a “useful article.”124
In the case of the Mardi Gras Indians’ suits, it is clear that the costume-like suits do not “serve a dual purpose of clothing the body and portraying their appearance[s].”125 The suits, which are worn over regular
clothing and can weigh over a hundred pounds each, do not serve any kind
of practical “clothing function,” but are artistic creations with the primary
function of looking “pretty.”126 In fact, the heavy application of artistic
elements such as beads and feathers to the suits actually detracts from
their functional wearability.127 Like the costumes in National Theme Productions, the Mardi Gras Indian suits do not “readily permit the wearer to
sit, recline, or maneuver easily,” and are intended to “be worn as an outer
shell over regular clothing.”128 Ultimately, the suits do not serve any kind
of useful “clothing function” — their only purpose is to portray the appearance of themselves. On a spectrum of utility, the suits exist on the end
of functional uselessness and aesthetic purpose. In this sense, they are
more like the copyrightable masks in Masquerade Novelty than un121
122
123
124
125
126
127
128
17 U.S.C. § 101 (2006).
See generally Poe, 745 F.2d 1238 (9th Cir. 1984).
Copyright Office Policy Decision: Registrability of Costume Designs, supra
note 3.
Chosun Int’l, Inc. v. Chrisha Creations, 414 F.3d 324, 330 (2d Cir. 2005).
Copyright Office Policy Decision: Registrability of Costume Designs, supra
note 3.
Robertson, supra note 5.
Id.
Nat’l Theme Prods., Inc. v. Jerry B. Beck, Inc., 696 F. Supp. 1348, 1350 (S.D.
Cal. 1988); Robertson, supra note 5.
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copyrightable articles of clothing — they “have no utility that does not
derive from their appearance.”129
Some would argue that costumes should be categorized as useful articles because they perform a “masquerading function.”130 But as the Second Circuit Court of Appeals pointed out in the Chosun International v.
Chrisha Creations case:
Chrisha’s broad understanding of masquerading as a “useful” function is
at odds with the Copyright Act’s very definition of “useful articles.” After
all, the Act states that a “useful article’ is one ‘having an intrinsic utilitarian function that is not merely to portray the appearance of the article or
to convey information.”131
If the Mardi Gras Indian suits are not considered to be “useful articles,” they would be protected by copyright as sculptural works, without
having to meet any kind of physical or conceptual separability test.132
B.
Copyright Protection Because Mardi Gras Indian Suits Satisfy the
Physical Separability Test
Section 101 of the 1976 Copyright Codes states that the design of a
useful article “shall be considered a pictorial, graphic, or sculptural work
only if, and only to the extent that, such design incorporates pictorial,
graphic, or sculptural features that can be identified separately from, and
are capable of existing independently of, the utilitarian aspects of the article.”133 Before Kieselstein-Cord validated conceptual separability in 1980,
the Copyright Code’s language could be interpreted as calling for physical
separability in instances where a useful article’s copyrightability was in
question.
The Mardi Gras Indian suits are renowned not for their wearability as
clothing, but for their bright colors, lush feather arrangements, and elaborate bead and rhinestone designs.134 These are all artistic elements, which
have been affixed to the suits’ canvas frames in particular arrangements,
designs, and patches.135 These decorative elements could be removed
129
130
131
132
133
134
135
Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 670-71 (3d Cir.
1990).
Chosun, 414 F.3d at 329.
Id. “We express skepticism regarding [the] claim that Halloween costumes
are, as such, copyright ineligible because they permit the wearer to masquerade. Were this the case, masks would necessarily be deemed ‘useful
articles.’ But that view has been expressly rejected by both the Copyright
Office and by other circuits.” Id.
See generally Superior Form Builders v. Dan Chase Taxidermy, 74 F.3d 488,
492, 494 (4th Cir. 1996).
17 U.S.C. § 101 (2006).
SMITH, supra note 5, at 122.
Id.
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from the suits’ canvas frames and are physically separable from the clothing-like frames of the suits.136 While this physical separability is not as
straightforward as the physical separability that could be achieved in Mazer — where the lamps’ statuette bases could be easily separated from
their lighting mechanisms — it can nonetheless be achieved.137 One can
imagine that if the ornamental designs affixed to the canvas frames of the
Mardi Gras Indian suits were to be removed and instead affixed to
stretched canvas frames that could be hung on walls, they would readily be
copyrightable as pictorial, graphic, or sculptural works. In fact, beaded
patches are frequently removed from suits after Mardi Gras festivities are
over, and these patches are displayed in tribe members’ homes like artwork.138 Ultimately, even if the Mardi Gras Indian suits are deemed to be
“useful articles,” they should still be eligible for copyright protection because their artistic elements are physically separable from whatever debatable clothing function they serve.
C.
Copyright Protection Because Mardi Gras Indian Suits Satisfy the
Conceptual Separability Test
In 1980, the Second Circuit validated conceptual separability in the
Kieselstein-Cord case.139 In the decades following Kieselstein-Cord, courts
put forth numerous formulations of the conceptual separability test, such
that the precise criteria that constitute the test are still unclear.140
The conceptual separability test, as put forth by Denicola and later
adopted by the Second Circuit in Brandir International, the Seventh Circuit in Pivot Point, and the Fourth Circuit in Collezione, puts a strong
emphasis on “the extent to which the work reflects artistic expression
uninhibited by functional considerations.”141 In this formulation of the
test, conceptual separability exists when “design elements can be identi136
137
138
139
140
141
Id.
Mazer v. Stein, 347 U.S. 201, 203 (1954).
SMITH, supra note 5, at 122.
Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980).
Galiano v. Harrah’s Operating Co., 416 F.3d 411, 417 (5th Cir. 2005). It is
worth noting that the court in the Kieselstein-Cord case determined that the
belt buckles in question were entitled to copyright protection to some extent because their “primary ornamental aspect . . . [was] conceptually separable from their subsidiary utilitarian function.” 632 F.2d at 993. Courts
today do not seem to concern themselves with what the primary function
and subsidiary function of an article are; this “primary function” test was
long ago deemed to be too subjective and problematic to be practical. See
Denicola supra note 67, at 733-34.
Denicola supra note 67, at 741; Brandir Int’l v. Cascade Pacific Lumber, 834
F.2d 1142, 1145, 1147 (2d Cir. 1987); Pivot Point Int’l, Inc. v. Charlene
Prods., 372 F.3d 913, 931 (7th Cir. 2004); and Universal Furniture Int’ll, Inc.
v. Collezione, 618 F.3d 417, 432-34 (4th Cir. 2010).
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fied as reflecting the designer’s artistic judgment exercised independently
of functional influences.”142
If the Mardi Gras Indians’ suits are to be examined for conceptual
separability under this standard, they surely are entitled to copyright protection. When a spectator at a Mardi Gras Indian procession takes a photograph of a Mardi Gras Indian suit, the spectator is not simply taking a
photograph of an article of clothing — he or she is taking a photograph of
an amalgamation of countless artistic elements, the product of countless
artistic decisions that have been made independently of functional considerations. The reason spectators are even interested in taking photographs
of the suits is that, in aggregation, these artistic elements are visually stunning. The arrangement of these artistic elements on each suit’s canvas
frame is dictated by its creator’s artistic vision and represents its creator’s
“arbitrary conceptions responsive to [his or her] aesthetic sensibilities.”143
Like the decorative elements that adorned the furniture in Collezione, the
decorative elements that adorn the Mardi Gras Indian suits are “superfluous nonfunctional adornments” for which the shape of the suit “serves as
the vehicle.”144
Some courts have indicated that a costume’s high level of impracticability as functional apparel lends itself to conceptual separability.145 If this
is the case, the Mardi Gras Indian suits likely achieve conceptual separability, since they embody a classic case of trading functionality for form;
the suits are unwieldy, bulky with feather arrangements, and can weigh
over a hundred pounds each.146 The suits are renowned not for their
wearability, but for their bright colors, lush feather arrangements, and
elaborate bead and rhinestone designs — all aesthetic features that are
conceptually separable from the suits’ debatable “clothing functions.”
Like the footwear in Animal Fair, the Mardi Gras Indian suits’ impractical
shapes, artwork designs, and combinations of colors are “all sculptural features which comprise the artistic design and which are wholly unrelated to
function.”147
It is worth noting here that, according to the legislative history, the
objective of the separability test was “to draw as clear a line as possible
between copyrightable works of applied art and uncopyrightable works of
142
143
144
145
146
147
Brandir Int’l, 834 F.2d at 1145; Pivot Point, 372 F.3d at 931.
National Theme Prods., Inc. v. Jerry B. Beck, Inc., 696 F. Supp. 1348, 1353
(S.D. Cal. 1988).
Collezione, 618 F.3d at 434.
Nat’l Theme Prods., 696 F. Supp. at 1354. “Given the minimal functional considerations [that] went into the design of the costumes, . . . they should be
afforded protection as applied art under the copyright law.” Id.
Robertson, supra note 5.
Animal Fair, Inc. v. Amfesco Indus., Inc., 620 F. Supp. 175, 187-88 (D. Minn.
1985).
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industrial design.”148 Professor Denicola argued that this “statutory directive requires a distinction between works of industrial design and works
whose origins lie outside the design process, despite the utilitarian environment in which they appear.”149 The Mardi Gras Indians’ suits are just
such works — they are works of art whose aesthetic origins lie outside the
design process. Despite the utilitarian environment in which they appear
(the environment of a costume or article of clothing), they are not functional or utilitarian articles, and they certainly are not works of industrial
design.
D.
Copyright Protection Because Mardi Gras Indian Suits Have
Potential Market Value as Stand-Alone Pieces of Artwork
In the 2005 Galiano case, the Fifth Circuit adopted a “likelihood-ofmarketability” standard for garment designs, based on the contention that
recent caselaw on the issue “tends to reflect a direct relationship between
a costume’s copyrightability and its actual or potential market value as a
stand-alone piece of artwork.”150 The court’s decision cited Poe and
Kieselstein-Cord as two cases in which the courts’ “willingness to recognize
the copyrightability of a useful item seem[ed], at some elemental level, to
turn on the capacity of the item to moonlight as a piece of marketable
artwork.”151 The court adopted the “likelihood-of-marketability” standard for garment designs only, and indicated that the burden is on the
garment designer to show that its designs are marketable independently of
their utilitarian function as clothing.152
If the Mardi Grad Indian suits are assessed using this “likelihood-ofmarketability” standard for garment designs, they will likely be deemed to
be copyrightable. Like the non-functional “swimsuit” in Poe, a Mardi
Gras Indian suit’s only reason for existence is as a work of art.153 And
unlike the plaintiff in Galiano, who was unable to show that her designs
were marketable independently of their utilitarian function as casino
uniforms,154 the Mardi Gras Indians would certainly be able to show that
their suits are marketable and have artistic value independent of whatever
utilitarian function they may have.
148
149
150
151
152
153
154
H.R. REP. NO. 94-1476, at 55 (1976). Professor Denicola argues that, in truth,
“there is no line, but merely a spectrum of forms and shapes responsive in
varying degrees to utilitarian concerns.” Denicola supra note 67, at 741.
Denicola supra note 67, at 741.
Galiano v. Harrah’s Operating Co., Inc., 416 F.3d 411, 420-21 (5th Cir. 2005).
Id. at 420.
Id. at 422.
Id. at 421.
Id. at 422.
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Journal, Copyright Society of the U.S.A.
First, the suits are widely acknowledged to be valuable pieces of African-American folk art, worthy of being displayed in exhibits and museums.155 For example, the Backstreet Cultural Museum in New Orleans
houses an extensive collection of Mardi Gras Indian suits from past
years.156 Additionally, the Louisiana Division of the Arts features an online exhibit entitled “Louisiana’s Living Traditions: The Creole State Exhibit,” which includes Mardi Gras Indian suits, regalia, and
photographs.157 The suits are featured in these exhibits not because they
are uncommonly functional articles of clothing, but because they are stunning works of art and valuable contributions to African American folk art.
Second, and perhaps more importantly, the very fact that a market for
derivative works featuring the suits exists is an excellent indication of the
suits’ artistic value; people would not be interested in purchasing coffeetable books or expensive photographic prints featuring the Mardi Gras
Indians’ suits if the suits had no artistic value.158 The market for these
derivative works currently exists and is being exploited, which is a strong
indicator of the suits’ “value as . . . stand-alone piece[s] of artwork.”159
Indeed, the high marketability of the suits and derivative works based on
the suits is the very reason that the Mardi Gras Indians are seeking copyright protection for them. The Mardi Gras Indians would readily be able
to satisfy the Fifth Circuit’s “likelihood-of-marketability” test and obtain
copyright protection for their suits.
It is worth noting that the Mardi Gras Indians’ legal issues are most
likely to be litigated in the federal courts of Louisiana. If the question of
their suits’ copyrightability reaches the court of appeals, it will be heard by
the Fifth Circuit Court of Appeals — the very court that issued the
Galiano decision, and therefore would apply the “likelihood-of-marketability” test.
V.
CONCLUSION
In recent years, several members of the Mardi Gras Indian tribes have
begun registering their suits for copyright protection under the category of
“sculptural works of art,” operating under the assumption that if they tried
to register them as “costumes,” they would be unprotected by copyright
law. However, an examination of recent case law reveals that the Mardi
Gras Indians’ suits should qualify for copyright protection even if they are
categorized as costumes; whether the standard used is that of physical sep155
156
157
158
159
See note 34 supra (regarding the Backstreet Cultural Museum).
Id.
See LOUISIANA LIVING TRADITIONS, http://www.louisianafolklife.org/FOLK
LIFEimagebase/FLImagesList.asp (last visited Oct. 23, 2012).
See supra note 38 (regarding Christopher Porche´ West).
Galiano v. Harrah’s Operating Co., Inc., 416 F.3d 411, 420 (5th Cir. 2005).
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arability, traditional conceptual separability, or likelihood-of-marketability, the ornate, hand-made Mardi Gras Indian suits satisfy the tests for
copyright protection.
All things being equal, however, there may be several reasons why
the Mardi Gras Indians would prefer to register their suits as “sculptural
works” rather than “costumes.” First, Mardi Gras Indian tribe members
spend thousands of dollars and hundreds of hours on their hand-crafted
suits, so a trivial term like “costume” does not and cannot adequately encapsulate the suits’ monetary and artistic values. Secondly, it seems a bit
disingenuous to call the suits mere “clothing” or “costumes,” in light of the
fact that they have been exhibited in museums and have been acknowledged to be important examples of African American folk art.160 Third,
the Mardi Gras Indians have existed at the margins of society for decades,
and as a matter of principle, they deserve to have their artistic and cultural
contributions to society properly acknowledged. For years, tribe members
have produced valuable works of art and engaged in their traditional activities without any official recognition or encouragement; copyright protection for their sculptural works of art would be an important step in
recognizing the Mardi Gras Indians as the legitimate artists that they truly
are.161
In 2010, Chief Howard Miller became one of the first Mardi Gras
Indian tribe members to secure a copyright registration for his suit under
the category of “sculptural work.”162 Since then, several other tribe members have also applied to copyright their suits under this category. It
seems that it is only a matter of time before these copyright registrations
will lead to suit-related litigation, but tribe members like Chief Miller feel
that no matter the outcome of future litigation, there is a great value to
their copyright registrations. In his words, “It’s a wonderful thing to know
that we’re considered to be in the art class and to be recognized . . . as
artists. It means a lot to the Mardi Gras Indians.”163
160
161
162
163
See note 35 regarding the Backstreet Cultural Museum and note 158 for discussion about the Louisiana Division of the Arts.
SMITH, supra note 5, at 150. “They continue their traditional activities without
any official recognition or encouragement, and despite adverse regulations
imposed from outside by authorities, which suppress the traditional context
and meaning of their culture.” Id.
Brittany Epps & Alex Rawls, A New Suit: All Rights Reserved, OFFBEAT MAG.
(July 1, 2010), available at http://www.offbeat.com/2010/07/01/a-new-suit-allrights-reserved.
Id.
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